Business and Intellectual Property
The trademark of a business is arguably one of its most valuable asset. It’s the reason people buy your product time and time again. People are generally risk averse with their money and want to know beforehand what they are purchasing. Protecting your business’ brand is a direct investment in the future profits of your business.
The process of protecting your brand involves several steps:
- Trademark Search and Clearance – the first thing you want to know is whether another company is using a mark that is confusingly similar to your proposed mark/brand logo. This can be done by searching the federal database at the USPTO as well as state databases and common law databases. A search must include not only direct hits but similar phonetics, spellings or other impressions that a mark might have on consumers. Once you’ve determined that no other marks are confusingly similar to your proposed mark you are ready to prepare an application.
- Trademark Application – the application process is fairly straightforward except for two highly technical questions. The first, is the class of goods/services that your mark represents. The USPTO has a list of all of the classifications. Selecting the correct classification will determine whether the mark gets approved by the examining attorney. It will also be a major factor in the level of protection that the mark will receive once it is registered. The second, is the description of the goods/services that your mark represents. Again the USPTO provides a manual of “pre-approved” descriptions for various goods and services. However, your particular mark may not fit neatly into one of these descriptions. Drafting an adequate description will also determine whether the examining attorney approves the application and will set the level of protection the mark receives.
- Trademark Prosecution – after an application has been filed it is assigned to an examining attorney. This attorney will review and scrutinize the application to ensure that it complies with the federal trademark laws. Often the examining attorney will have objections to the application. These objections will be issued as “Office Actions.” The applicant will need to respond to these actions in a timely manner or else the application will become abandoned and the mark will not be registered. Some Office Actions are merely procedural in nature while others will involve substantive issues of trademark law. Resolving these issues is critical to obtaining a registered mark.
- Trademark Registration – once the application has been reviewed, prosecuted and published for opposition without issue, the examining attorney will approve the application for registration. This entire process could up to one year to complete. The benefits, however, could last the lifetime of the mark and provide substantial financial benefits to its owner.
All businesses that are developing a brand to represent their goods/services should consider obtaining and maintaining a registered trademark. To exemplify this statement consider Coca-Cola. Management at Coca-Cola have stated that even if the company lost all of its manufacturing plants, buildings, vehicles and other hard assets, it would be able to rebuild itself simply by relying on the brand. Nike is another excellent example. As one of the most recognizable brands, Nike is more a marketing company than a sports equipment and clothing company. The brand is so strong that Nike can license the use of its mark to clothing manufacturers and reap enormous profits without ever opening another factory. Businesses run on IP. Protecting that IP is critical to long term marketability as well as competitive advantage.